Appeal No. 1999-1393
Application No. 08/242,344
case we believe the better course of action is to move forward with a decision on
the merits of this appeal.
The initial burden of establishing reasons for unpatentability rests on the
examiner. In re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992). Furthermore, to establish a prima facie case of obviousness, there must be
both some suggestion or motivation to modify the references or combine reference
teachings and a reasonable expectation of success. In re Vaeck, 947 F.2d 488,
493, 20 USPQ2d 1438, 1442 (Fed. Cir. 1991).
Claim 22:
The examiner states (Answer53, bridging paragraph, pages 6-7) that:
Because a practitioner of the art of molecular biology was well aware
that the ultimate value of a glutamate receptor subunit like those of
Heinemann et al. would lie in the applicability of the data derived
therefrom to human subjects, as evidenced by the statements of Sun
et al., that artisan would have found the isolation of a DNA encoding
the entire human counterpart of the rat GluR2 that was disclosed in the
Heinemann et al. publication by probing a human cDNA library with a
rat nucleic acid probe in a manner that was directly analogous to the
one described by Puckett et al. to facilitate the recombinant
expression and characterization of the encoded product in the
absence of other human glutamate receptors for those reasons
disclosed by Sun et al. to have been prima facie obvious to an artisan
of ordinary skill in the art of molecular biology at the time the instant
invention was made.
Appellants discuss the differences between the GluR2B receptor recited in
the instant claims and the prior art, and argue (Brief54, pages 13-15) that “[t]he art
fails to suggest not only the existence of appellants’ GluR2B receptor, but also the
structure and sequence of such a protein.”
53 Paper No. 37, mailed March 18, 1999.
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